Agrizapping Obviousness
Today, in Agrizap, Inc. v. Woodstream Corp. (Fed. Cir. May 28, 2008), the Federal Circuit overturned a jury verdict of nonobviousness. The claimed invention is a rodent electrocution trap, U.S. Patent No. 5,949,636. The key difference between the ‘636 trap and the key prior art trap (a trap the patentee sold more than a year before the ‘636 patent’s filing date) is that the prior art trap used a mechanical switch and the claimed trap uses a resistive switch.
The Federal Circuit’s analysis employs a post-KSR presumptive obviousness framework that I think we’ll see quite a bit of in the coming years. Here’s the entirety of the court’s substantive analysis of the nonobviousness question:
This is a textbook case of when the asserted claims involve a combination of familiar elements according to known methods that does no more than yield predictable results. KSR, 127 S. Ct. at 1739. The only difference between the Gopher Zapper and the asserted claims, as conceded by Agrizap, is the type of switch used to complete the circuit that triggers the generator. The asserted claims simply substitute a resistive electrical switch for the mechanical pressure switch employed by the Gopher Zapper. As illustrated by the Dye and Madsen patents, the use of an animal body as a resistive switch to complete a circuit for the generation of an electric charge was already well known in the prior art. In favoring resistive switches over mechanical switches, both the Dye and Madsen patents are directed to solving the same problem as the ’636 patent—the malfunction of mechanical switches in environments prone to dirt and dampness. See ’746 patent col.1 ll.43-46, ll.53-63; ’809 patent col.1 ll.31-55.
In this case, the objective evidence of nonobviousness simply cannot overcome such a strong prima facie case of obviousness. Similarly, in Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., we held that the objective considerations of nonobviousness presented in that case, including substantial evidence of commercial success, praise, and long-felt need, were inadequate to overcome a strong showing of primary considerations that rendered the claims at issue invalid. 485 F.3d 1157, 1162 (Fed. Cir. 2007). Based on the foregoing, we reverse the district court’s denial of Woodstream’s motion for JMOL as to the obviousness of the asserted claims.
So, Joe, how about K Moore and Euro TSM (aka PSA). Thus:
Starting point: Gopher Zapper
Objective problem: susceptibility to dirt and damp
Claimed solution: resistive switch.
TSM in prior art? DONT KNOW. What do Dye and Madsen say about the resistive switch, as a way to reduce susceptibility to dirt and damp?
If Dye or Madsen contains a hint to use resistive to lower the susceptibility, claim obvious. Otherwise, maybe Euro PSA indicates: not obvious.
But, should be dirt simple to decide: Y/N.
Comment by MaxDrei — March 29, 2008 @ 11:19 am
Sorry Joe, and readers. I didn’t read the Moore decision carefully enough. Page 11, last line reveals that both Dye and Madsen were teaching that one way to reduce susceptibility to dirt and damp is….a resistive switch. I think that just about wraps it up, and I think even the average juryman (or District Court Judge)could follow PSA logic, once it is explained.
Comment by MaxDrei — March 29, 2008 @ 1:16 pm
IMHO, this is a “textbook case” of judicial arrogance.
The specification explains why the person of ordinary skill in “the art” would not want to use an electronic detector (i.e. resistive switch) and instead would want to use the mechanical one. Neither Judge Moore, nor you, nor I, has shown ourselves as qualified to know how a person skilled in “the art” thinks. On the other hand, the inventor has provided testimony showing the artisan would not want to use an electronic switch. This is a case where the appeals court doesn’t want to get confused with the facts on record but instead prefers to weave its own know-it-all tale.
Moreover there is an open question of claim construction. The spec describes what the resistive switch “must do”. Therefore it is not any off-the-self electronic switch. The defendant had to copy the technology by use of trickery (fraud –as affirmed) because it was not obvious to them how to do it. This is a case that screams with secondary indicia.
IMO the appeals court was too quick to close the executioner’s switch on this patent without even giving the patent owner a chance to defend against a new ground of rejection. Another hapless inventor sent to his demise under the hubris of LeapFrog style justice. Just another day in Ox Bow country. Hang ‘em high. Yeeha.
Comment by step back — March 30, 2008 @ 11:15 pm
Step,
You may be right. I’m not trying to characterize people’s motives, so much as report on developments.
One thing that gives me pause in your second paragraph: The patent in suit may explain reasons not to choose a resistive switch. But doesn’t that information need to be put in context with the Dye and Madsen prior art references on the use of resistive switches in pertinent circumstances? In other words, something isn’t necessarily true simply because it appears in a patent specification, is it?
Thanks for commenting!
Joe
Comment by Joe — March 31, 2008 @ 5:34 am
Step,
Your second paragraph would be compelling only if the specification you were referring to were one of the prior art references.
A “teaching away” argument is based on the notion that the prior art references provides some reason not to make the claimed combination (showing that the inventor went against conventional wisdom, and hence was innovative). One cannot contrive a “teaching away” scenario by merely asserting an absence of teaching, suggestion, or motivation …
This invention appears to have been characterized by the CAFC as a routine engineering improvement to an older design. So, I shed no tears for Agrizap… and if the earlier patent were claimed so narrowly as to require the use of a mechanical switch (as opposed to the more general use of a switch to actuate a circuit), then I feel even less pity.
The more compelling question, in my mind, is raised by the summary way in which Judge Moore dismissed the evidence of secondary considerations. Where does this case, and Leapfrog, leave the so-called objective evidence of non-obviousness?
Comment by Reading — March 31, 2008 @ 6:59 am
Picking up on Reading’s point …
My tentative impression is that the persuasiveness of commercial success evidence is fading, and fast. This leaves demonstrated long-felt unmet need, and teaching away, as the only powerful rebuttals to the presumptive obviousness of a claim to a recombination of prior art elements along the lines of their known functions … as KSR itself suggests.
Comment by Joe — March 31, 2008 @ 8:01 am
Reading, the earlier is limited to mechanical. But I supposed that was deliberate. In #1 you claim the “mechanical” selection as surprising and unexpected then, a year later, in patent app #2, you claim the only other way, resistance switch, as guess what surprising and unexpected. result: competitors if you don’t infringe one of my patents, you surely infringe the other. Routine drafting skills, I should have thought. As to secondary desiderata, they’re the exception rather than the rule, aren’t they. No cause for an exception here, or?
Comment by MaxDrei — March 31, 2008 @ 9:42 am
Joe,
Thank you for posting on the Agrizap case.
I think it is an important stepping stone in the development of post-KSR law.
Looking at the patent itself, I note that they use a ground loop detector for detecting when the hapless pest has made sufficiently good contact between real ground and the zap plate so that likelihood of success in getting a lethal zap the first time is high. As the patent explains, if you don’t finish them off on the first zap, they will learn to avoid the mechanism and never come back to it. Apparently the technology, and the hapless pest, are both more sophisticated than one would assume if one had no skill in the art.
I’m not here to criticize the ultimate decision of yes-or-no re obviousness. What I am concerened about is the rapid execution style in how the patent was dispatched without giving rigorous analysis to what a “resistive switch” with its recited two terminals is and giving rigorous analysis to whether the applied references are indeed analogous art.
All too “routinely” I see people using the word “routine” without giving thought to what it means or what “obviousness” means. Hindsight rationalization is built into the human psyche and into evolution’s wiring of our brains. We use hindsight all the time –and then deny it.
The issue is how practitioners in “the art” thought at the relevant time and not how we, the after-the-fact wise guys see the “obviousness” of the thing in retrospect. I don’t see any rigorous introspection into that question in the Agrizap patent zap.
Comment by step back — March 31, 2008 @ 11:10 am
Step, I can go along with much of what you write. The CAFC is having to do the work that should have been done lower down, and it’s not doing it as rigorously as it should. How can it? Common law courts of appeal don’t do fact-finding, do they? But, anyway, the claim in view is distinguished from the prior art starting point by just one characterizing technical feature, namely, a resistive switch. You can pick other interesting stuff out of the spec but it’s not the claimed invention, is it? What was it that judge said? Something about the claim being the thing that counts.
Comment by MaxDrei — March 31, 2008 @ 10:30 pm
Max,
Thanks for chiming in from across the pond.
Odd that a European attorney should show interest in this while hardly a word is heard from fellow Americans.
However, a recent New York Times article suggests that Americans prefer the company of dumb people (or at least the leadership of such); someone you can have a beer with and discuss how the Sun orbits the Earth or more preferably how the Yankees performed in the last baseball game. link
But never mind that.
The lower court did do a more rigorous job. I quote:
“Subparagraph (b)(1) of Claim 16 states:
b) an electronic portion comprising:
i) a resistive switch coupled between said high voltage electrode and said
reference electrode, said resistive switch further comprising a trigger circuit
having a trigger output and an arm/ disarm input.
This claim will be construed as: a switch that is physically connected across the electrodes. The
switch includes a distinct trigger circuit with a trigger output and an arm/ disarm input.”
This is from the Markman hearing, a PDF of which can be found at:
http://www.paed.uscourts.gov/documents/opinions/06D0590P.pdf
It is the appeals court that dummied things down by assuming that the term “resistive switch” had some ordinary meaning and was an off-the-shelf item that could be modularly swapped in as an obvious substitute for a mechanical “switch”. After all, a switch is a switch, isn’t it?
Never mind. Let’s go out and have a beer. You like Bud or Coors?
Comment by step back — April 1, 2008 @ 4:44 am
P.S.
OK. I didn’t see that Dennis (Patently-O) had finally posted on AgriZap. Haven’t read all the comments there but do note that you (Max) went out and did real research. I hadn’t gone that far off my daily path to actually study the cited prior art, the cattle prod, etc. Thanks.
Comment by step back — April 1, 2008 @ 4:51 am
Thanks Step. Some research, but not enough. Erez Gur also points out that the asserted claim has stuff in it about circuits. I was assuming that the prior art starting point (Agrizap’s product on the market with the mechanical switch) had those things too. Didn’t it? As to beer, my attitude proves your point really. I can’t tell the difference, between Bud and Coors. Mind you, it might depend whether you mean Czech or American “Bud” (Only joking).
Comment by MaxDrei — April 1, 2008 @ 7:48 am
Page 9 of the Moore decision. The prior art Gopher Zapper “discloses all of the limitations of the asserted claims in the 636 patent with one exception – it discloses a mechanical switch instead of a resistive switch to complete the circuit”. One of the consequences of thinking in a “characterized by” EPO style is that it often exposes the weakness of fancy, flowery US-style claims. Re-arranging such a claim in c-i-t form, the characterizing feature turns out to be something like “and flexible” or “and low density” or some other such unpatentable indefinite uninventive tosh. At any rate, it doesn’t arf focus the obviousness debate,from that point on.
Comment by MaxDrei — April 1, 2008 @ 1:07 pm